DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Zha et al. (WO-2019094805-A1).
Regarding claims 1-6, 10 and 14-15
Zha discloses a water-based composition comprising 25-99 wt % of a polymer binder having an acid value of 10-150 mgKOH/g (claims 1, 9). Said composition further comprises 0.1 to 50 wt % of particles having a melting temperature over 60 C, which can be a wax, in particular carnauba wax (i.e., bio-based carbon + biodegradable wax) (paras 0063 and 0099), from a short finite list with predictable results making it obvious to select carnauba wax.
Zha discloses that the polymer binder may be an ethylene (meth)acrylate copolymer (para 0066). Under such circumstances the composition would be expected to be free to styrene. Further it is noted the claim prohibits styrene (i.e., a specific molecule) and not styrene-based polymers.
It is noted that the composition of Zha is water based, and he teaches 25 to 99 wt % one or more polymer and 0.1 to 50 wt % of one or more particles. This totals to between 75 to 99.1 wt % of the two components, leaving 0.9 to 25 wt % water, overlapping the claimed amount
As the amounts of the components, the acid value, and the temperatures of the reference overlap the claimed amount the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claims 7-9
Zha is silent as to whether the dispersible resin is biobased carbon. However, whether a compound is bio-based or synthetic does not materially affect the compound.
Regarding claim 11
Zha discloses the use of an acrylic based polymer having a glass transition temperature of preferably from 50 to 100 C (para 0077). However, Zha discloses that at least one polymer binder has a glass transition temperature of less than 10 C (abstract). As such it would have been prima facie obvious for the skilled artisan to use both a resin and a co-resin.
As to the melting point Zha discloses that a water barrier coating has at least one polymer with a melting point of at least 120 C (para 0019). Making it obvious to use a co-resin with a melting point of at least 120 C.
Further as the amount of the resin(s) used in the reference overlap the claimed amount the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549
Regarding claim 12
Biodegradability of the resin is a property of the resin, and as the reference discloses the claimed polymers they would be expected to also have the same properties, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 13
Zha discloses that polyester resins may be used (para 0065).
Regarding claim 16
Zha discloses the use of a cross-linking agent such as ammonium zinc carbonate (para 0105).
Regarding claim 17
Zha discloses the use of a water miscible solvent such as ethanol in ana mount of 0.1 to 10 wt % (para 0112).
Regarding claim 18
Being repulpable and compostable is a property of the composition, and as the reference discloses the claimed components they would be expected to also have the same properties, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claims 19-20
These are properties of the composition, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 21
Zha discloses the use of additives such as wetting agents (para 0106).
Regarding claims 22-23
Zha discloses that the composition may be applied to various substrates (abstract), including cellulosic substrates (title).
Regarding claim 24-25
Zha discloses that the article may be a drinking cup (i.e., food packaging article) (para 0118).
Regarding claim 26
Zha discloses discloses curing the coating (para 0106).
Regarding claims 27 and 29
Zha discloses sealing the coating with heat and pressure (para 0125).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Zha et al. (WO-2019094805-A1), as applied to claims 1-27 and 29 above, in view of Valencia et al. (US 2014/0123607).
Regarding claim 28
Although Zha does not disclose hot air or ultrasonic sealing, Zha does disclose heat sealing. However, Valencia discloses that in heat sealing that the seal may be made by ultrasonic sealing (para 0037). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Zha by using an ultrasonic sealer to seal the coating, with a reasonable expectation of success, as suggested by Valencia.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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